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Technology Transfer International Journal of Intellectual Property Law, Economy and Management 1 (2005) 13–18 Academic Technology Transfer Terry A. Young Consulting Editor Technology Innovation Group, Inc. Academic technology transfer is the passage of knowl- Academic research is the foundation for technology edge from its creator to another person or organization transfer, the “factory” that creates the potential “prod- for some purpose or public benefit. Academic technol- ucts” for commercial application. Some universities ogy transfer occurs every day in a university, in the focus upon education and instruction only, and not collegial exchange of research data between faculty upon research; such institutions do not conduct suffi- members; the knowledge passed from the teacher to cient research to generate the quantity and the quality the student; faculty publications and reports; presenta- of innovation that warrant the creation of offices to tions of research results at conferences; expertise com- manage intellectual property and technology transfer. municated to industry partners, and many other means. For example, there were 2,363 four-year degree granti- Academic technology transfer is the very heart of the ng institutions of higher education in the United States traditional missions of academia: education, research in 2000.1 Yet, only an estimated 200 universities in the and public service. United States accomplished sufficient research to war- rant establishing a formal office or process to manage 1. A More Focused Definition IPR and technology transfer.2 After more than twenty years of valuable experi- A more focused definition of academic technology ences, the international Association of University transfer has emerged in the last twenty years, perhaps Technology Managers (AUTM) today promotes four with origins in the “Bayh-Dole Act of 1980,” an primary reasons for academic technology transfer: amendment to the United States patent code. This leg- • Facilitate the commercialization of research results islation enabled U.S. universities to claim ownership for the public good rights in intellectual property arising from research • Reward, retain and recruit faculty funded by the U.S. Government. To manage this intel- • Induce closer ties to industry lectual property, U.S. universities began to focus upon • Generate income and promote economic growth3 the protection of their inventions through U.S. and international patent systems in the 1980s, and to enter 2. The Academic Technology Transfer into contracts with industry for the commercial devel- Process — The Foundation opment of these inventions. This bold experiment by the U.S. Congress was tremendously successful in 2.1. Mission Statement achieving its goal of the commercialization of univer- To begin with, a university must determine if its sity inventions. As a result, the Bayh-Dole Act inspired research base warrants a dedicated technology transfer many other countries in the 1990s to adopt their own initiative or office. In many cases, a university may systems for the commercial application of university possess some research with commercial potential, but research results. Accordingly today, “academic tech- not sufficient volume to create a dedicated commer- nology transfer” is generally understood to refer to the cialization service. In such cases, the institution might commercialization of university research results, and is consider: (i) partnering with other universities in the defined in this paper as the transfer of university- region to create one program to serve all; (ii) assigning owned intellectual property rights (IPR) to industry for technology transfer activities to another office within commercial application and public benefit. the institution, such as the university’s research man- ISSN 1349-7723 © 2005 IPAJ All rights reserved. 13 T. A. Young agement office; (iii) partnering with local community interest, and many more requirements. As examples, economic development organizations, such as “techno the intellectual property policies for most research- marts”; or (iv) contracting with another capable orga- intensive universities in the United States and in many nization to manage the limited opportunities. other countries are found on the AUTM website This paper assumes that the university has sufficient (www.autm.net). research to warrant the creation of a dedicated technol- ogy transfer office or a “TLO”. A TLO must have a 2.3. Establishment of a Technology Licensing Office clear and well-understood mission statement to guide (TLO) its activities and decisions. In a study recently con- The university’s mission statement and its IPR policies ducted for the U.S. National Governors Association, impact the internal infrastructure to support research Dr. Louis Tornatzky identified a “clearly articulated and technology transfer. Internationally, there are mission statement” as one of seven critical attributes many different forms of university technology transfer of an exemplary TLO.4 The TLO’s mission statement organizations, such as: (i) an office or department should be brief, establishing its operational focus and within the university typically described as a setting the expectations of its customers. The TLO’s Technology Licensing Office (TLO), an Office of mission should also be consistent with the stated mis- Technology Transfer (OTT) or some similar name; (ii) sion of the university. As an example, the mission an external office, established either as a for-profit statement of the TLO at The Texas A&M University company (“UNICO” = http://www.unico.org.uk/) or a System clearly identifies service to research faculty as not-for-profit organization such as a foundation; (iii) its primary mission: “The TLO serves the faculty to both an external organization and a university office transfer research results to commercial application for working together; and (iv) an external company to per- public benefit.” form contract services for the university on a project- by-project basis. 2.2. Policies and Procedures The size of a TLO typically is reflective of the uni- Next in importance in establishing a TLO are clear versity’s research budget, the size of the subsidy pro- policies and procedures to provide guidance to the vided to the TLO by a third party (government), or technology transfer process. Policies must be transpar- both. In 2002, the author published a paper entitled, ent to all of the university’s constituents (administra- “Financing Technology Licensing Offices,” which tors, faculty, students, industry partners, government, indicated that funding for TLOs is provided from the public, etc.). Clearly defined and easily understood many different sources from country-to-country, rules defining ownership of intellectual property must including government funding, private venture capital, be at the core of the policy. There is no “correct” way third party philanthropic foundations, percentage of to define ownership. In fact, it is defined and managed earnings and the like.5 differently around the world: some countries require institutional ownership of inventions; some countries 3. The Academic Technology Transfer reserve ownership for the faculty inventors; some Process — Operations countries stipulate that rights in inventions are jointly owned by the university and the faculty inventor; and 3.1. Identifying Innovations with Potential some countries leave the determination of ownership Commercial Value to each university. In the United States, each university University research may lead to innovations with to free to choose its own rule regarding IPR owner- potential commercial value. The process for identify- ship; in every university but one, the institution places ing innovations with commercial value should be ownership of IPR in the university (the exception is clearly defined and understood in written protocols.6 A the University of Wisconsin). Regardless of the few U.S. universities employ individuals whose sole approach chosen, without clarity in the ownership of job function is to monitor faculty research, and to col- IPR arising from academic research, technology trans- laborate with faculty to identify research initiatives fer is not possible. that may lead to innovations with potential commercial Obviously, policies should address other issues criti- value. Yet, the most prevalent model in the United cal to the success of academic technology transfer pro- States is to rely upon the faculty researchers them- grams, such as distribution of income, the disclosure selves to voluntarily bring forward their innovations to process, assignment of responsibility for seeking the attention of the TLO by submission of a formal patent protection, management of potential conflicts of “Disclosure of Invention.” The disclosure describes 14 Academic Technology Transfer the unique technical features of the discovery, as well made, as described above in the evaluation process. as addresses certain questions impacting legal or con- Funds are placed “at risk” by the university when it tractual issues (correctly naming the inventors, identi- has no immediate source of external funding to prose- fying research contracts that funded the discovery, not- cute an unlicensed invention. Finally, the patent prose- ing any publication dates, and the like). Most disclo- cution becomes even more expensive if international sure of invention forms utilized by U.S. universities patent protection is sought. are linked to the AUTM website. TLOs secure funding for patent applications
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